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Trademark filings can be an interesting lens to look at an entire industry. Today, we’ll look at real estate. It had a huge rise in the 2000s as housing prices boomed, then the subprime mortgage crisis hit the industry hard from 2007 – 2010.

Trademark filing trends track the rise, fall, and slow return of the industry surprisingly well. I looked at 4 main classes – Class 9 (apps), 35 (), 36 (), and 42 (hosted software). Filing trends for each largely match up, although Class 36 is both the most common class for applications and has seen the most proportionate growth in the post-2013 rebound.

The filing uptick before 2007 is clear, and followed by the sharp, recession-induced tail that we would expect. Filings were static though 2013, and started to rebound. Class 9 and 42 (apps and websites) are the least common, which may make sense given the additional technological investment required. Class 35 (real estate sales and marketing services) were more common, and Class 36 (listing and brokerage services) by far the most.

It’s not quite clear why Class 36 applications have spiked more than other classes over the last three years. I suspected that it might be a rise in foreign applicants, especially from China, but that is not a meaningful factor.

It is interesting that trademark filings have jumped more than actual US home sales – sales dropped from more than 7 million in 2005 to a low of 4.1 million in 2008 and 2010; sales have only rebounded to around 5.5 million per year in 2017-2018.

TM TKO’s new Office Action analytics let you prepare smarter, better Office Action responses in less time. Our tools do the complex research for you, instantaneously. See a full example of the kind of Office Action analytics that TM TKO provides, or try it now from your Tools menu.

Issue-driven analysis: instantly provides you successful responses for similar marks for similar products or services to help you build on the successes of others. Pull any TSDR document in formatted PDF or plain-text format.

Examiner details: compare your Examining Attorney’s allowance rates on this issue with others in that Law Office and at the USPTO overall, and see recent successful responses for your issue and your Examiner.

Citation histories: do deep dives into citation histories at a click. It’s easy to understand complex webs of co-existence, assess your own chances of success, and see how the cited prior filings have interacted with other applications.

ThorCheck

Office Action analysis integrates with ThorCheck, TM TKO’s ground-breaking comparative research tool based on a precedential TTAB opinion, to find examples of co-existence of the same mark for two sets of goods with different owners. This evidence helps you push back against likelihood of confusion claims. You can also use ThorCheck to provide confusion evidence as the senior party in a Letter of Protest or opposition.Search Upgrades

Office Action and prosecution data is now integrated across our platform.

Results in knockout search, manual search, and watch results all feature easily accessible citation data, full TSDR file histories with Office Actions and Responses tagged by issue, and quick links to prosecution analysis. Just click on the magnifying glass icon for a wealth of research options.

Here in Nashville, we’re starting to get occasional warm days (and even more occasional dry days), and spring training baseball has arrived with the warmer weather. Our local AAA team, the Nashville Sounds, has a beautiful stadium right next to downtown, and we can’t wait for the season to start.

In honor of the boys of summer, this blog post looks at the key term in team names, and how popular they are as marks not for pro baseball teams. The research looked at singular and plural forms, which probably overcounted Reds and Nationals a bit, but at least this permitted consistent methodology. The Google Books N-gram research doesn’t try to exclude baseball content in the same way, so marks like RED SOX aren’t screen for non-baseball use in the same way.

Twins, Angels, and Nationals were much more common than the median in both lists, with Rays, Athletics, Tigers, Rangers, Pirates, Reds, and Giants substantially above the median on both lists, too. The terms that had the least salience in more general brand use and Google N-gram book usage were Orioles, the two colored Sox, Astros, and Diamondbacks, with Phillies, Marlins, Dodgers, Padres, and Rockies all lower than the median on both, but less dramatically so.

Braves and Brewers were a good bit more common on the brand side than n-grams, and Cubs and Cardinals were the only terms that were noticeably more common from an n-gram perspective (versus the median) than as brands.

The vast majority of “law” created in the trademark space is made via ex parte examination by the US Patent & Trademark Office. There have been over nine million Office Actions and Responses sent to and from the USPTO and trademark professionals, compared to only some 850 citable and 11,600 non-citable decisions from the Trademark Trial and Appeal Board, and a similarly small number of federal and state cases.

This June, TM TKO is revealing tools that will let you tap this huge body of Office Actions and responses. This series of blog posts will explore situations where the power of Office Action search can help you be a better lawyer.

Let’s consider a situation where your client, a craft brewery, has applied for the shape of a tap handle that it plans to use in bars. The design consists of a five-pointed star. The Examining Attorney has refused the mark as ornamental. How do you move forward?

Currently, you’re limited to poking around on TSDR in the hopes that you run across an application that raised a similar issue. With TM TKO, you can skip all the guesswork and focus right in on the most relevant prior Office Actions, and identify model responses. You can even limit the results to applications that eventually moved on to publication, indicating that they overcame the issues raised by the Examining Attorney.

Here’s what we see – a set of results focused on exactly the sort of issue your client faces.

The first result is the prosecution history for the following tap design:

In an Office Action issued in 2011, the USPTO preliminarily refused registration on the grounds that hexagonal designs were common or basic in the industry, and thus likely to be perceived as ornamental or otherwise non-distinctive. Counsel for the applicant, Charles Bacall of Verrill Dana, LLP, submitted a lengthy response arguing both that the design is inherently distinctive, differentiating it from the evidence provided by the Examining Attorney, and arguing in the alternative that the mark has acquired distinctiveness based on considerable sales figures and supporting affidavits from industry experts. It’s a perfect model to start thinking about and planning a response to your client’s Office Action. Despite the excellent arguments, the Examining Attorney would not yield, and the mark was registered on the Supplemental Register – also a useful data point in advising your client about the chances of success and the best path forward. A 2(f) claim was accepted in a subsequent filing for the same mark, and the mark is now protected on the Principal Register, Reg. No. 4,872,679.

Today, not only does the tap handle design a registered trademark that helps drinkers identify Allagash Brewing Company beers from across a bar, the company even sells tap handles from its online company store. You can buy one for your home pub at https://shop.allagash.com/collections/tap-handles.

Over the coming days, we will continue to explore more situations where Office Action and Office Action Response searches can help you do your best work for your trademark clients.

This article analyzes UDRP decisions in favor of the respondent domain owner in 2016. What factors sunk complainants and what fact patterns favored respondents?

Data set

The data was manually coded from the National Arbitration Forum (“NAF”) searchable case database, and taken from the aggregate reporting provided by the World Intellectual Property Organization (“WIPO”).

Both organizations have strikingly similar outcomes: roughly 90% of complaints succeeded in UDRP claims. Of those, a bit more than two percent of the WIPO decisions took the baffling step of canceling the domain name instead of seeking its transfer, putting the domains back in the general registration pool, where the complainant has no better chance than anyone else of getting the domain name. The one strategic reason to file for cancellation may be where the domain name included marks from both the complainant and a third party, where the complainant may not be able to secure transfer.

Outcome summaries are presented below in a table and as a pie chart.

NAF

WIPO

Outcome

Cases

Percentage

Cases

Percentage

Cancellation

3

0.20%

51

2.16%

Transfer

1300

87.72%

2133

90.23%

Denied

179

12.08%

179

7.57%

Total

1482

100%

2363

100%

Since the overall outcomes are so similar and time is not unlimited, we focused only on NAF results for a more detailed breakdown.

Trends

We analyzed each victory for a respondent based on the grounds cited by the UDRP panel. Many decisions had more than one ground cited, so the total count of issues exceeded the raw number of decisions. There were some clear patterns in the results, reviewed below.

The Complainant Lost a Prior UDRP or Court Proceeding

Complainants always lost where there was res judicata applied. It would seem self-evident that a prior loss in a UDRP proceeding or domain-related litigation would preclude winning a UDRP in the future, since the UDRP is primarily focused on the rights of the complainant and conduct of the respondent at the time of registration. Several complainants tried anyway and predictably failed.

The Complainant Does Not Have Priority

This was the second clear loser for complainants and was much more common than res judicata. Even though the UDRP requires evidence of bad faith registration and use to prevail, about 25% of the losing complainants filed complaints where the domain owner acquired the domain name in question before the complainant had trademark rights. UDRP decisions uniformly hold that registration in these circumstances cannot be in bad faith (even if use can) and also generally hold that the respondent has rights or legitimate interests in the domain name.

The typical fact pattern involved the complainant trying to capture the .com domain name corresponding to the mark where the domain name was registered before the complainant adopted or first sought to register its mark. The complainants quite reasonably want to get the domain name, often attempting (unsuccessfully) to purchase it from the owner, and then quite unreasonably used a UDRP proceeding to attempt to get their hands on it. Of course, the registration could not have been in “bad faith” where the complainant had no rights at the time of registration! This fact pattern is most likely to lead not only to a quick and firm rejection of the complainant’s claims, but also to a “reverse domain name hijacking” finding by the UDRP panel.

Where the domain name was registered prior to the complainant’s first trademark rights, but has been used in bad faith since (e.g. for pay-per-click ads for competitive goods or the like), the UDRP is just not the right tool. Complainants would have a perfectly good ACPA claim on the same facts. Whether these complainants were unaware of the differences in the claim or simply wanted to avoid the cost of federal court litigation is not clear, but filing a lawsuit isn’t wildly more expensive than filing a UDRP, and it’s easy to leverage a clearly winning ACPA claim into a quick settlement, where filing a clear-loser UDRP complaint is little better than burning money.

The Complainant Did Not Adequately Pleading (or Did Not Have) Common-Law Rights

Poorly-supported claims of common-law rights were another common loser, totaling roughly 20% of the UDRP losses by complainants. The typical fact pattern was a small or new business, or an individual claiming trademark rights in their name – often filing the complaint without a representative – filing a complaint that provided little more than a business name registration or a Facebook page as evidence of common-law rights. Many of these complaints, like those in the “priority” section above, sought to take high-value domain names, often those consisting solely of a combination of generic terms. To be clear, common-law claims in general were not problematic for complainants: common-law complaints backed by significant evidence of sales, advertising expenditures, and public recognition like press coverage had no more issues than registration-based complaints in providing rights under 4(a)(i).

The Complaint Targeted a Criticism Site

Complainants have largely figured out that the UDRP is not a great tool for trying to shut down critical sites that are not actively trying to confuse visitors. While complainants occasionally prevail – there is a bit of a split in the UDRP case law on the point – 5% of losses still related to criticism sites.

The Complaint Used the UDRP to Address a Business Dispute

About 15% of disputes failed because they fell outside the scope of the UDRP. Most were situations where the parties had some relationship, e.g. a former employee or officer of the complainant registered the domain name in their name while working for the complainant, and the complainant tried to use a UDRP claim to get it back. Panels tend to reject these claims as fundamentally contract or agency questions rather than questions within the scope of the UDRP.

The Complaint Addressed a Reseller

About 5% of the failed claims related to resellers, where the panel found that, between the nature of the domain name and the site, the registrant was attempting to operate a legitimate and non-confusing resale operation.

Other issues

About 10% of complaints also foundered on the “rights or legitimate interests” inquiry (largely cases where the complainant ran a site that was not competitive with the trademark owner’s business) or “bad faith” inquiry (generally where an offer to sell in response to a purchase inquiry from the domain owner was used as the sole proof of bad faith, and wasn’t enough, by itself, to show the registrant’s initial bad intent). Five of these involved successful claims that the registrant simply registered generic English terms that happened to match the complainant’s trademark, which was a generic English term for some goods but was used for unrelated goods. These defenses were most successful when the respondent had a huge portfolio of such domains, and didn’t appear to be targeting the complainant’s business (or the marks of other brand owners) in other ways. Interestingly, the respondent prevailed in a couple of proceedings even though an automated pay-per-click ad service put up ads competitive with the complainant; the panels refused to impute bad faith registration even though there was evidence of bad faith use. Those decisions were a bit of a departure from the norm.

A handful of proceedings were lost on other formalities grounds, most often where a complaint related to a domain name that included the marks of two companies, only one of whom was a party to the proceeding.

Conclusion

We hope this was a useful double-check for UDRP complainants prior to filing, and a useful guide to analyzing potential claim weaknesses for respondents in domain name dispute proceedings.

Like any other venture, charities have trademark rights. Charities’ names and logos are important assets, and consumer confusion (especially donation-related scams) can be a significant problem for many charities. With that in mind, we took a look at how the twenty-five largest charities in the US treat their trademark portfolios.

There is as much variation in the charities’ trademark protection strategies as there is in the organizations’ charitable missions. Some, like the United Way, St. Jude, and Cru, are very active applicants with numerous trademark registrations and pending applications; others, like the Task Force for Global Health and the Patient Access Network Foundation, have little to no registry presence. There were no obvious correlations between trademark filing decisions and the nature of the charity, its geographic focus, or its religious affiliation or lack thereof.

The graph below is normalized: blue shows the charity’s revenue, red total US trademark filings, and yellow 2016 trademark filings.

For the curious, the non-normalized data follows: it includes not only the three categories charted above but also the “expense ratio” from CharityNavigator.org — the percentage of revenue spent on the stated charitable goal, at least for those organizations required to publicly report that data. CharityNavigator.org has many additional metrics that normalize expense ratios across different types of organizations, which may necessitate very different cost structures.

The US Patent & Trademark Office will not register trademarks for drugs that are regulated under the Controlled Substances Act or for related paraphernalia. 21 U.S.C. §§801-971; TMEP § 907. That does not stop applicants from applying for a wide range of marijuana-related products and services, and many products that are not the drug itself nor paraphernalia are registrable. Direct registration protection for marijuana products is available via state registries. This blog post looks at filing trends in the USPTO’s federal registry.

California legalized medical marijuana in 1996, with several Oregon (1998) and Main (1999) following suit. Six states legalized medical marijuana in the 2000s and nine more did so in the 2010s. Recreational legalization began with Colorado and Washington in 2012 and has since expanded to nine more states.

Marijuana-related trademark filings on the federal level did not exactly match up with state-level legalization trends, possibly because legalization tends to require slow and bureaucratic rulemaking. Federal trademark filings started to accelerate in 2009, and really skyrocketed in 2014.

Most federal trademark filings are focused on a handful of classes. The chart below shows filings where the mark, the mark description, or the description of goods contains certain “single-purpose” marijuana-related terms. For instance, “cannabis” was included as a search term but not “joint,” whose primary use is not marijuana-related.

The key classes were:

Class 5 for medicines; these will presumably be almost uniformly refused under the Controlled Substances Act;

Class 25 for clothing; these “merchandising” or “messaging” products are generally accepted by the USPTO;

Classes 30-34, presumably for edibles; these also face an uphill battle under the CSA;

Class 35 for retail services, which will face CSA issues, and online review/recommendation services, which should be OK;

Class 41 for entertainment services, generally OK; and

Class 44 for medical services, largely on the medical marijuana side of the industry, and which generally face CSA issues.

As state-level legalization efforts continue, it is possible that Congress will amend the Controlled Substances Act to permit limited intellectual property protections for marijuana-related products and services in states where they are legal. Until then, applicants in the marijuana industry will have to seek as much federal trademark protection as they can for ancillary products or for merchandised goods, and rely on a patchwork of common-law rights and state trademark registrations to protect the brand identifies of their core products.